The Complainant is Western Logistics Inc., Canada, represented by Perley-Robertson, Hill & McDougall LLP, Canada.
The Respondent is Great Emmanuel, Nigeria. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2021. On February 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 19, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2021 The Center appointed Jon Lang as the sole panelist in this matter on April 19, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a British Columbia corporation. It was founded in 1989 and carries on business as a specialized furniture carrier providing transportation services coast to coast in Canada and throughout North America. The Complainant is the registered proprietor of the Canadian Western Logistics & Design trademark (TMA 386,374) filed on November 8, 1989 and registered on July 5, 1991. In or around 1990, the Complainant adopted and commenced use of the WESTERN LOGISTICS trademark on and in connection with, inter alia, freight consolidation, installation and project management of office furniture and furniture systems and consulting services in connection therewith. The Complainant has extensively used and continues to use the WESTERN LOGISTICS trademark in connection with the advertising and promotion of the Complainant’s services in trade and consumer magazines, via direct mail and on the Internet. The Complainant has also registered the Western Logistics & Design logo as an artistic work under Canadian copyright law. Since in or around 1990, the Complainant has offered its services to customers through the Internet and advertises its services on its website at “www.westernlogistics.com”. The WESTERN LOGISTICS trademark is prominently displayed on the Complainant’s website and advertisements, and on the Complainant’s trucks and trailers. By reason of its extensive use, the WESTERN LOGISTICS trademark is well known, instantaneously recognized and exclusively associated throughout Canada and the United States of America with high quality transportation and logistics services exclusively offered by the Complainant. As a result of the time, effort and money invested in its business, the Complainant has achieved a reputation for excellence in the delivery of its transportation and logistics services. The Respondent appears to be an individual based in Nigeria. His address appears incomplete. The Domain Name was registered on June 13, 2019. In approximately May 2020, the Complainant discovered that the Respondent was using the Domain Name to point to a website (the Respondent’s website) which shows (on the contact information page) a company name, “Western Logistics International” with what also appears to be an incomplete address. The Respondent’s website appears to be created from several instances of copyright infringement from various businesses in the transportation and logistics industry. On the main page of the Respondent’s website appears an image (taken directly from the home page of the Complainant’s website) of one of the Complainant’s trucks parked in front of one of the Complainant’s buildings, and the wording used on the Respondent’s website is taken from other third party websites. On May 27, 2020, counsel for the Complainant sent to the Respondent a cease and desist letter but no reply has been received. 5. Parties’ Contentions The following is a summary of the main contentions of the Complainant. A. Complainant The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights The Complainant has a significant reputation in the WESTERN LOGISTICS trademark which is well recognized throughout North America, particularly in Canada and particularly in association with transportation and logistics services. The Domain Name incorporates virtually the entire wording from the WESTERN LOGISTICS trademark with only the letter “s” removed from the end of the word “logistics”, with the remaining portion of the Domain Name comprising the descriptive word “services”, which adds nothing to the distinctiveness of the Domain Name. The Domain Name intentionally incorporates the WESTERN LOGISTICS trademark and it is clear that the Respondent knew about the Complainant given that the Respondent’s website includes numerous examples of copying from the Complainant’s website. The fact that the Respondent has added the word “services” does not reduce the likelihood of confusion. The Respondent has no rights or legitimate interests in respect of the Domain Name Use of the WESTERN LOGISTICS trademark, either as part of the Domain Name or on the Respondent’s website, was not authorized, approved or sanctioned by Complainant. The Respondent’s website does not appear to be used in connection with a bona fide offering of goods and services. Although the website does advertise services, the contact information provided is incomplete and/or fake. As well as an incomplete address, the “Customer Care” phone number provided is fake - it simply has the 1-800 toll-free prefix, followed by the numbers 1 to 9 in numeric order i.e.1800-123-45-6789. Other phone numbers provided also appear fake, so even though the Respondent, on the face of it, would appear to be offering services, it is not a bona fide offering given that it would be effectively impossible to contact the Respondent. There is no suggestion that the Respondent has been commonly known by the Domain Name and there is nothing legitimate about the use of the Domain Name, which appears to have been created to misleadingly divert consumers or to tarnish the Complainant’s trademark. There is no “fair use” in this case, such as for commentary or criticism. The Domain Name has been registered and is being used in bad faith The Respondent has registered Domain Name “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided [the respondent has] engaged in a pattern of such conduct” (paragraph 4(b)(ii) of the Policy. The Complainant believes that the Respondent has engaged in such conduct through the registration of “www.westernlogisticservice.info”. The domain name registrant for that website is privacy protected, but the registrant country is listed as Nigeria. The content of the “.info” website is virtually identical to the content of the Respondent’s website. Given the similarities in the domain names, the content of the websites to which they point and the connection to Nigeria, it is submitted that an inference be made that the Respondent is also the registrant of the The Complainant asserts that the Domain Name has been registered “primarily for the purpose of disrupting the business of a competitor” (paragraph 4(b)(iii) of the Policy). The Respondent intentionally adopted the Domain Name with prior knowledge of the Complainant’s rights, clearly seeing some value in doing so. In the absence of any explanation from the Respondent, a reasonable assumption would be that the Respondent was attempting to divert potential customers of the Complainant to the Respondent’s website. The Complainant also asserts that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location” (paragraph 4(b)(iv) of the Policy). The Domain Name is clearly being used to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark (as well disrupting the Complainant’s business). The Respondent’s use of false information is further evidence of the bad faith. Moreover, the Respondent has committed copyright infringement which should also be seen as evidence of bad faith on the part of the Respondent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed. A. Identical or Confusingly Similar The Complainant is the proprietor of the WESTERN LOGISTICS trademark and clearly has rights in that mark. Ignoring the generic Top-Level Domain “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the entire textual element of the WESTERN LOGISTICS trademark albeit the last letter of the word “logistics” (i.e. “s”) forms the first letter of the second element of the Domain Name, namely the word “services”. The WESTERN LOGISTICS trademark and Domain Name are not identical and thus the issue of confusing similarity must be considered. Application of the confusing similarity test under the UDRP typically involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview 3.0”)). Section 1.7 of the WIPO Overview 3.0 goes on to provide “…in cases where a domain name incorporates the entirety of a trademark, (…) the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. The WESTERN LOGISTICS trademark is incorporated in its entirety and clearly recognizable within the Domain Name. The addition of the word “services” which follows it does little to diminish the visual impression created by the Domain Name, namely that the WESTERN LOGISTICS trademark is its dominant element. Inclusion of the word “services” (or strictly speaking the letters “ervices” with the initial letter “s” being “borrowed” from the end of the immediately preceding WESTERN LOGISTICS trademark) does not prevent the Domain Name being confusingly similar to the WESTERN LOGISTICS trademark (see section 1.8 of the WIPO Overview 3.0). The Panel finds that the Domain Name is confusingly similar to the WESTERN LOGISTICS trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complainant’s contentions however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding. A respondent can show it has rights to or legitimate interests in a domain name in various ways even where it is not, as here, licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. Here, however, the Respondent is not known by the Domain Name. The Respondent has used the confusingly similar Domain Name to attract Internet users to a website imitating the Complainant. It is a copycat site which uses an image taken from the Complainant’s website and displays the WESTERN LOGISTICS trademark, albeit with text taken from the websites of companies other than the Complainant. Moreover, the contact details on the Respondent’s website are incomplete and/or fictitious. These circumstances far from suggest a bona fide offering of goods or services, or a legitimate noncommercial or fair use. The very purpose in the Respondent choosing the Domain Name it did was to deliberately create a false impression of association with the Complainant. The Respondent has not come forward with a Response or taken any other action to address the Complaint, no doubt because there is unlikely to be anything it could say that could justify its registration and use of the Domain Name in the manner described. There is no evidence before this Panel suggesting that the Respondent might have rights or legitimate interests in the Domain Name. The evidence suggests the contrary. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith There can be little doubt that the Respondent was aware of the Complainant’s WESTERN LOGISTICS trademark at the time of registration of the Domain Name given the use to which it has been put. Paragraph 4(b) of the Policy provides a number of non-exclusive scenarios which may evidence a respondent’s bad faith. They include, for instance, a respondent registering a domain name in order to prevent an owner of the trademark or service mark to which it is said to be confusingly similar or identical, from reflecting the mark in question in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. A respondent registering a domain name primarily for the purposes of disrupting the business of a competitor is another scenario, as is a respondent intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. This latter scenario appears to reflect what the Respondent has done here and in these circumstances, there is no need to go on to consider other paragraph 4(b) scenarios. This is particularly so given that at a more general level, it seems clear that the Respondent has sought to take unfair advantage of and/or to abuse the Complainant’s WESTERN LOGISTICS trademark and such behaviour is broadly understood to constitute bad faith for the purposes of the Policy, regardless of any precise “match” with any of the paragraph 4(b) scenarios. There is a clear absence of any rights or legitimate interests in the Domain Name on the part of the Respondent, no explanation from the Respondent (credible or otherwise) for the choice of Domain Name and a complete absence of any conceivable good faith use. In all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of registration and use of the Domain Name in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name Jon Lang
Sole Panelist
Date: May 3, 2021
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